Court Orders PTO To Produce Dispute Email Disparaging Inventor

We have reported previously on inventor Gilbert Hyatt’s FOIA lawsuit to obtain an email from one patent examiner working on Mr. Hyatt’s patent applications to another concerning Mr. Hyatt, which the PTO argued was not even an “agency record” and therefore not subject to FOIA at all.

In an order filed on July 24, the United States District Court for the District of Columbia ordered the PTO to produce the disputed email to the Court for its review. The Court also chided the PTO for its failure to support its request for a judgment allowing it to withhold the email:

Despite the vigor with which the PTO is opposing production of the Khuu email, the government has only described it as containing a “personal opinion [Ms. Khuu] expressed to a close colleague in the context of an email exchange about divorce proceedings.” [citation omitted] The PTO has failed to cite for the Court which jurisdiction, in which galaxy, would find that description enough for the government to carry its burden to establish that there is no question of material fact remaining in this matter.

Read the order:

Khuu Order

Court: PTO Exiled Inventor’s Applications to a “Proverbial Never-Never Land”

In a decision last week, the United States District Court for the District of Columbia rejected the PTO’s claim that independent inventor Gilbert Hyatt engaged in unreasonable and abusive delay on his patent applications. Instead, the Court found, the PTO had placed Mr. Hyatt’s applications “in a proverbial Never-Never Land,” blocking Mr. Hyatt from prosecuting them for approximately a decade.

The Court also had stern words for the PTO’s argument that Mr. Hyatt’s litigation prompted it to block progress on his applications:

The suspensions between 2003 and 2012 appear largely to be responses to pending litigation, not the applications, themselves. To the extent PTO resents having had to devise “unusual procedures … that were not needed with respect to other applicants, who for example, did not litigate regarding procedural issue[s] and did not file Section 145 appeals,” the Court finds that sentiment to be somewhere between vexing and outright galling. It takes a certain chutzpah for a government agency to chafe against citizens seeking to vindicate their rights through lawfully available means, even in those cases where the opposing party’s litigious zeal is itself remarkable for any number of reasons.

(citations omitted).

Read the full opinion:

Lamberth Laches Decision


In a separate decision, the Court also found that Mr. Hyatt was entitled to the issuance of patents on all three of the applications that went to trial. Read that opinion:

Lamberth Merits Decision

Attorney: PTO “has no response to our overwhelming evidence of its bad faith” against inventor

Legal trade publication Law360 covers inventor Gilbert Hyatt’s suit against the PTO challenging its decision to never issue him another patent.  As the article reports, the PTO recent filed its motion to dismiss the lawsuit, but the PTO motion has no response to Mr. Hyatt’s central claim in the suit:

Hyatt’s attorney, Andrew Grossman of Baker & Hostetler LLP, said Monday that the USPTO’s motion simply ignores the complaint’s allegations that the office has unfairly put Hyatt’s applications in “bureaucratic purgatory.”

“The fundamental issue in this case is that the PTO has decided never to issue another patent to Mr. Hyatt ever again, no matter his entitlement to one, no matter his constitutional due process rights, no matter the merits of his inventions,” he said. “It’s bizarre that the PTO’s motion to dismiss has nothing to say about that fundamental claim. It just has no response to our overwhelming evidence of its bad faith.”

The USPTO is wrong to say that judicial review is unavailable in this situation, Grossman said, because “when agency processes run off the rails, the courts exist to put them back on track.”

Read the full article here.

How Hyatt Won Discovery Against the PTO

After the PTO asserted in court that inventor Gilbert Hyatt had purposefully delayed agency action on his own patent applications, Mr. Hyatt sought–and obtained–discovery into the PTO’s handling of his applications, its Hyatt-specific policies, its secret SAWS program, and its bias and animus against him. Unfortunately, many of those materials remain confidential, on the PTO’s say-so, and so the information they revealed is largely redacted in the public versions of Mr. Hyatt’s legal filings.

But the PTO can’t suppress Mr. Hyatt’s own impressions and recollections. Here, for example, is the declaration that he filed in support of his request for discovery:

Secrecy Is the PTO Policy

In his litigation with the PTO, inventor Gilbert P. Hyatt was able to obtain through discovery a wealth of information concerning the SAWS program, the PTO’s handling of so-called “pre-GATT” patent applications, its treatment of his applications, and its bias and animus against him. The PTO blanket designated many of its discovery materials as confidential under a protective order. And so, in November 2017, Mr. Hyatt moved the district court to (in effect) unseal that evidence so that Mr. Hyatt could share it with the public.

The PTO opposed that motion, specifically seeking to maintain the secrecy of internal PTO emails that would serve as “evidence of unclean hands” in its treatment of Mr. Hyatt. Without citing any legal authority, it argued (in Section II of its brief) that “internal emails between USPTO employees, reports from internal USPTO databases (e.g., PALM record reports), and other internal USPTO documents” should not be disclosed to the public, even if they are not subject to any privilege and even if they could be obtained through a FOIA request. It also argued that PTO materials displayed in open court should be withheld from disclosure to the public.

In his reply brief, Mr.Hyatt explained that the PTO had “failed to ‘establish[] good cause for the “Protected” designation’ for each of the individual records at issue,” as the district court’s protective order required it to do.

Meanwhile, two days after Mr. Hyatt filed his motion to unseal, the PTO filed an “Emergency Motion To Seal Protected Material Filed By Plaintiff,” asking the district court to pull down off the public docket evidence produced by the PTO that had been shown and discussed in open court. Mr. Hyatt filed his opposition to that motion the same day, November 9, 2017, and the PTO never filed a reply. To date, the district court has yet to rule on the PTO’s “Emergency Motion.”

PTO Examiner Opines on Inventor’s Divorce, But PTO Refuses To Disclose What She Said

Background on inventor Gilbert P. Hyatt’s Freedom of Information Act request and lawsuit:

This Freedom of Information Act (“FOIA”) case is a dispute over a single email. Plaintiff Gilbert P. Hyatt, an inventor with numerous applications pending before the Patent and Trademark Office (“PTO”), learned during other litigation with the PTO that one of its patent examiners sent an email to all members of the “Hyatt Unit” that is responsible for examining his applications containing a link to a salacious 1993 newspaper article concerning Mr. Hyatt’s divorce, with the observation that the article “provides a unique glimpse into Hyatt’s mind.” The PTO produced that email in discovery. But what it did not produce, or even acknowledge the existence of, was a second email sent in response to the first one by another examiner, Cindy Khuu. This “Khuu Email,” the PTO has conceded, was sent from one patent examiner working on Mr. Hyatt’s patent applications to another, using the PTO’s email system, and concerns the subject of their work, Mr. Hyatt. Mr. Hyatt learned of the Khuu Email only by happenstance, when it was mentioned in a deposition. He filed a FOIA request for it, which the agency denied on the unbelievable ground that it is not an agency record at all. So Mr. Hyatt is now challenging that determination in court, seeking to compel the PTO to produce an email that it appears to be unwilling to release due to the embarrassment it may cause the agency.

According to the PTO, if the email is made public, “It is likely that Ms. Khuu would be subjected to annoyance or harassment, by Plaintiff or others.”

Hyatt’s litigation to compel the PTO to disclose the email is briefed and awaiting decision.

Legal filings:

Hyatt – Khuu FOIA Complaint

Hyatt – Khuu FOIA MSJ – Memorandum

PTO – Khuu FOIA MSJ Memo

Hyatt – Khuu Response and Reply

Hyatt v. U.S. Patent and Trademark Office

In the mid-1990s, the PTO decided that it would never issue another patent to inventor Gilbert P. Hyatt. After delaying action on his pending applications for years, the PTO changed course and threw them into administrative purgatory, expecting to wait out Hyatt until he gives up or dies. Instead, he filed suit against the agency.

Read the complaint:

Hyatt v. PTO – Redacted Complaint

Update: Why the redactions? Ask the PTO.